A dog toy that was at the heart of a copyright conflict between a Scottsdale-based manufacturer and Jack Daniels.

A dog toy that was at the heart of a copyright conflict between a Scottsdale-based manufacturer and Jack Daniels.

Jack Daniels: dog toy with ‘juvenile bathroom humor’ violates trademark; case should be clarified by the SCOTUS, says Logan Elia, Rose Law Group partner and litigator

By Howard Fischer | Capitol Media Services via Arizona Capitol Times

A major whiskey manufacturer wants the U.S. Supreme Court to stop an Arizona firm from producing a dog toy that the company’s attorneys say associates its “image of sophistication” with “juvenile bathroom humor.”

And it could all come down to whether the justices think it’s funny.

The petition by Jack Daniels seeks to bar Scottsdale-based VIP Productions from producing and selling a squeaky dog toy in the shape of — and with a label that looks like — a bottle of the company’s Old No. 7 Black Label Tennessee Whiskey.

There are some differences.

For example, the “Old No. 7 Tennessee Sour Mash Whiskey” on the label is replaced by “The Old No. 2 on your Tennessee Carpet.” It’s also labeled “Bad Spaniels” instead of “Jack Daniels.”

And instead of alcohol-content descriptions, the toy was labeled “43% Poo by Vol.” and “100% Smelly.”

A trial judge sided with the whiskey company, citing evidence that 29 percent of consumers believed Jack Daniels actually sponsored the toy, declaring that it infringed on the company’s trademark. But the 9th Circuit Court of Appeals saw the issue through a different legal lens.

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“This is an intoxicating issue to chew on. But, in the end, I think the 9th Circuit is barking up the wrong tree. All courts agree that Jack Daniel’s trade dress and bottle design – the famous square bottle with a ribbed neck, a black cap, arched white printing with filigreed border – are entitled to protection. Everyone agrees that the dog toy would be improper if it simply replicated the bottle. The issue is whether the dog toy maker can avoid trademark protection while copying Jack Daniel’s trade dress if the dog toy is called “Bad Spaniels” and contains “43% poop by volume.” Jack Daniel’s licenses its brand to pet products and 29% of consumers were confused as to the origin of this product. The dog toy manufacturer convinced the 9th Circuit that “Bad Spaniels” and “43% poop by volume” were “artistic expression” and the public’s First Amendment interest in this expression outweighed Jack Daniel’s intellectual property interest. While this ruling might adequately reflect the state of public discourse today, I think the Court read the artistic expression exception too broadly. The 9th Circuit is traditionally hostile to business interests. I’d like to see the Supreme Court take up this case and clarify the law. Otherwise, I think I will start marketing Corgi-Cola bottles as dog toys without paying royalties.”

~Logan Elia, partner, litigator

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